Federal Circuit Rules that the Invention of a Method of Making Chemical Compounds May Be Sufficient Contribution to Qualify for Joint Inventorship of the Compounds

By Charles Pierce

In Falana v. Kent State Univ., 101 USPQ2d 1414 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s order that Dr. Olusegun Falana (Falana) be added as an inventor to U.S. Patent No. 6,830,789 (the ‘789 patent), and did not address the district court’s award of attorney’s fees to Falana.

Kent Displays, Inc., a private spinoff of Kent State University (collectively, KDI) was attempting to develop proprietary chiral additives with high, temperature independent helical twisting power (HTP) for use in liquid crystal displays.  They hired Dr. Alexander Seed (Seed), who in turn hired Falana.  While working for KDI, Falana developed a synthesis protocol for making naphthyl substituted TADDOLs.  He used his synthesis protocol to create such a TADDOL, which was designated Compound 7.  Compound 7 was found to be significantly temperature independent, and represented significant progress for the project.  Falana left KDI soon after this development.

After Falana’s departure, Seed synthesized another compound using Falana’s synthesis protocol, Compound 9.  Compound 9 satisfied the goals of the project, and KDI filed for a patent.  Claim 1 of the ‘789 patent described “[a]n optically active compound . . .” but did not include any limitations as to the temperature independence of the compound’s HTP.  Following the ‘789 patent’s issuance, Falana learned of it and sued to correct inventorship.

KDI argued that although the claims of the ‘789 patent do not include such a limitation, they should be limited to “an optically active compound having a substantially temperature independent [HTP].”  As the specification of the ‘789 patent describes the compounds as possessing  a substantially temperature independent HTP, KDI asserted that this should be read to limit the claims.  The Federal Circuit disagreed, stating, “[I]t is the claims, not the written description, which define the scope of the patent right.”  Falana at 9.  The Federal Circuit also distinguished Alloc, Inc. v. International Trade Commission, 342 F.3d 1361 (Fed. Cir. 2003).  In Alloc, the Court limited the claims of a patent to include a “play” requirement not found in the claims.  The patentee, however, had stressed the importance of the “play” requirement during prosecution and had distinguished prior art on that basis.  Because there was no such prosecution history here, the Federal Circuit declined to limit the scope of the claims of the ‘789 patent.

The Federal Circuit then turned their attention to whether Falana should be added as an inventor of the ‘789 patent.  They noted that “a joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed,” Falana at 12 (citing Burroughs Wellcome Co. v. Barr Labs., Inc, 40 F.3d 1223, 1227 (Fed. Cir. 2003)), and that “[p]eople may be joint inventors . . . even though each does not make the same type or amount of contribution.”  Id. (citing 35 U.S.C. § 116).  Citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998), the Federal Circuit stated that a contribution to a single claim is enough to satisfy the requirements of joint inventorship.  See id. at 1460.  Finally, in Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997), the Federal Circuit ruled that each joint inventor must contribute in some significant manner to the conception of an invention, and conception of a chemical compound requires knowledge of both the specific chemical structure of the compound and the operative method of making it.  The facts were uncontested: Falana contributed the synthesis protocol used to make Compound 9 but did not synthesize it himself.  This protocol was the only method of making the compounds disclosed in the ‘789 patent.

Accordingly, the Court defined the issue as “[w]hether a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound.”  Falana at 13.  KDI asserted that Bd. of Educ. v .Am. BioSci, Inc., 333 F.3d 1330 (Fed. Cir. 2003) held that “a putative inventor’s contribution of a method for making chemical compounds is legally irrelevant to whether he is a joint inventor on a patent that does not claim any method of making those compounds.”  Falana at 14.

The Court disagreed with KDI’s reading of American Bioscience.  They distinguished the case, stating that in American Bioscience, the putative co-inventor seeking to be added neither made the claimed compounds, attempted to make them, nor had a firm and definite idea of the claimed combination as a whole.  Though he contributed the process, his lack of communication with the inventor defeated his claim to co-inventorship.  His method was considered to have become a part of the knowledge considered ordinary skill in the art.  Here, Falana was employed to synthesize compounds such as the ones disclosed in the ‘789 patent and created the synthesis protocol disclosed as a method of making those compounds.  He also synthesized Compound 7, regarded by KDI as significant progress in the project.  Finding that Falana’s contribution was greater than ordinary skill in the art, the Federal Circuit ruled that it was sufficient for Falana to qualify for joint inventorship.

Significance to Patent Applicants

Falana highlights the difficulty of determining who is considered an inventor.  While seemingly clear for product claims, if the product requires a new method of manufacture, the inquiry is even less clear.  As demonstrated in Falana, the very method used to create the product can be considered an inventive contribution to the product even where left unclaimed.  Therefore, even where only product claims are being sought, patent applicants need to be conscious of the effect of the method of manufacture on the inventorship itself.


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